DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed 24 September 2026, with respect to objections of claims 11 and 18 have been fully considered and are persuasive. Applicant has amended the claims to overcome the previous rejections. Accordingly, the objection of claims 11 and 18 has been withdrawn.
Applicant’s amendments and arguments, filed 24 September 2026, with respect to 35 U.S.C. § 112(b) rejections of claims 8, 10, and 11 have been fully considered and are persuasive. The 35 U.S.C. § 112(b) rejections of claims 8, 10, and 11 has been withdrawn.
Applicant’s amendments and arguments, filed 24 September 2026, with respect to rejections of claims 2, 8, and 11 under 35 U.S.C. § 112(d) have been fully considered and are persuasive. Applicant has amended the claims to further clarify the formula and overcome the rejection of record. Accordingly, the 35 U.S.C. § 112(d) rejection of claims 2, 8, and 11 has been withdrawn.
Applicant's arguments filed 24 September 2026 have been fully considered but they are not persuasive. Applicant argues that a “radiation-sensitive organic ligand” is defined in the instant specification and points to the teaching "In some embodiments, the radiation-sensitive organic ligand is formed using at least one of alcohol amine, alcohol, phenol, a nitrogen-containing heterocyclic compound, nitrile, phosphine, phosphonic acid, thiol, and an organic selenium compound." (Specification, para. 00116).
However, as noted in the recited part of the specification this does not fully define what a radiation-sensitive organic ligand is as it only covers “some embodiements”. If these are the intended components of the composition then this language can be included in the claim. However, this appears to only be a limited teaching as noted by the use of both some embodiements as well as the use of selenium which is only one of the possible coordination atoms recited. Accordingly, the 35 U.S.C. § 112(b) rejection of claims 1-15 and 17-18 for “radiation-sensitive organic ligand” is maintained.
Regarding the arguments to the double patenting rejection the arguments are not found persuasive. Both the instant application and the copending application are drawn to organic mixed metal-oxygen compounds which comprise overlapping metals and overlapping ligands. Accordingly, the arguments are not persuasive and the rejection is maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 and 17-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to Claims 1-15 and 17-18: The claims refer to a “radiation-sensitive organic ligand”. However, it is unclear what structure is implied by the “radiation-sensitive”. Additionally, it is unclear to what degree the ligand is sensitive, how it can be determined that the ligand is sensitive to radiation, and further what type of radiation exposure the ligand is sensitive to. Accordingly, it is unclear what the structure of the “radiation-sensitive organic ligand” is within the claimed subject matter.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15, 17, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18647024 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are drawn to materials or compositions containing a metal oxygen compound having multiple ligands and the ligands can be radiation sensitive.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
